Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Andy Lau
Claim Number: FA1512001650732
Complainant is Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA (“Complainant”), represented by Todd Martin of Fross Zelnick Lehrman & Zissu, P.C., United States of America. Respondent is Andy Lau (“Respondent”), Florida, United States of America.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jack-wolfskin.us>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 3, 2015; the Forum received payment on December 3, 2015.
On December 3, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <jack-wolfskin.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jack-wolfskin.us. Also on December 8, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the JACK WOLFSKIN mark to identify with its apparel offerings. Complainant has registered the JACK WOLFSKIN mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,968,989, registered May 31, 2011), which demonstrates its rights in the mark. Respondent’s <jack-wolfskin.us> domain name is confusingly similar to the JACK WOLFSKIN mark as the domain name incorporates the mark entirely, while merely adding a hyphen between terms of the mark, along with the “.us” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <jack-wolfskin.us> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of JACK WOLFSKIN in a domain name per Policy ¶4(c)(iii). Nothing in the available evidence indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶4(c)(i). Further, Respondent is not making a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use under Policy ¶4(c)(ii) and (iv), respectively. Instead, the disputed domain name resolves to a page which purports to be Complainant, effectively passing itself off as Complainant. The resolving pages to the <jack-wolfskin.us> domain name also offer counterfeit versions of Complainant’s products.
Respondent registered or has used the disputed domain name in bad faith. Respondent has used the disputed <jack-wolfskin.us> domain as part of a pattern of domain registrations per Policy ¶4(b)(ii), as Respondent has been involved in a prior UDRP proceeding. See Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Any Lau, D2015-1536 (WIPO Oct. 20, 2015) (ordering transfer of disputed domain to complainant). Additionally, while Respondent passes itself off as Complainant to sell counterfeit versions of Complainant’s products, Policy ¶4(b)(iv) has clearly been evidenced, as is Respondent’s actual knowledge of the JACK WOLFSKIN mark and Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
It should be noted the parties were involved in another UDRP proceeding involving a similar domain name, <jack-wolfskin-outlet.com>, See Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Any Lau, D2015-1536 (WIPO Oct. 20, 2015). Not surprisingly, the result is the same in this case. While the issues may not be res judicata, there is some collateral estoppel effect.
Complainant uses the JACK WOLFSKIN mark to identify with its apparel offerings. Complainant registered the JACK WOLFSKIN mark with the USPTO (e.g., Reg. No. 3,968,989, registered May 31, 2011). Registrations with a governmental authority (such as the USPTO) adequately demonstrate Policy ¶4(a)(i) rights in the mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Nat. Arb. Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Complainant has satisfactorily demonstrated its Policy ¶4(a)(i) rights in the JACK WOLFSKIN mark.
Complainant claims Respondent’s <jack-wolfskin.us> domain name is confusingly similar to the JACK WOLFSKIN mark because the domain name incorporates the mark entirely, while adding a hyphen between terms of the mark, along with the “.us” ccTLD. The addition of a hyphen is not sufficient to prevent a finding of confusing similarity between a mark and domain name under Policy ¶4(a)(i). See Allstate Insurance Company v. Brian McFedries, FA 1601235 (Nat. Arb. Forum Feb. 25, 2015) (panel stating that “adding the hyphen to the domain name does nothing to distinguish the domain name from the trademark under Policy ¶4(a)(i).”). Every domain name requires a TLD, whether it is a gTLD or a ccTLD. Therefore, the TLD must be ignored when determining if there is a confusing similarity between the mark and the domain name under Policy ¶4(a)(i). See also CloudFlare, Inc. v. [Registrant], FA 1624251 (Nat. Arb. Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶4(a)(i).”). The <jack-wolfskin.us> domain name is confusingly similar to the JACK WOLFSKIN mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the <jack-wolfskin.us> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of JACK WOLFSKIN mark in a domain name per Policy ¶4(c)(iii). The WHOIS information does not indicate any obvious similarity between Respondent’s name and the disputed domain name. Respondent has not submitted any evidence which would suggest it is commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The same conclusions were reached in Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Any Lau, D2015-1536 (WIPO Oct. 20, 2015). There is no evidentiary basis for finding Respondent is commonly known by the <jack-wolfskin.us> domain name under Policy ¶4(c)(iii).
There is nothing in the record which indicates Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶4(c)(i)). Respondent has failed to prove any rights under Policy ¶4(c)(i).
Complainant claims Respondent is not making a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use under Policy ¶4(c)(ii) and (iv), respectively. The disputed domain name resolves to a page which purports to be Complainant’s web site, effectively passing Respondent off as Complainant. This does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶4(c)(ii) and (iv). In addition, the resolving pages to the <jack-wolfskin.us> domain name offer counterfeit versions of Complainant’s products. Once again, offering counterfeit products does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶4(c)(ii) and (iv). See, e.g., Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Respondent has failed to use the <jack-wolfskin.us> domain name in connection with any bona fide offering of goods or services under Policy ¶4(c)(ii) or for any legitimate noncommercial or fair use under Policy ¶4(c)(iv).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and used the disputed domain name in bad faith. It would seem the logic behind the <jack-wolfskin-outlet.com> domain name in Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Any Lau, D2015-1536 (WIPO Oct. 20, 2015) should have some persuasive value in this UDRP proceeding involving the <jack-wolfskin.us> domain name.
Respondent passes itself off as Complainant to sell counterfeit versions of Complainant’s products. There is no doubt selling counterfeit goods constitutes bad faith registration and use under Policy ¶4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Respondent has registered and used the disputed domain name in bad faith under Policy ¶4(b)(iv).
There is no doubt Respondent knew about Complainant’s mark. There were proceedings between the parties on this point before, Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Any Lau, D2015-1536 (WIPO Oct. 20, 2015). Respondent is selling counterfeit products, as well as passing itself off as Complainant. This clearly shows Respondent actually knew about the JACK WOLFSKIN mark and Complainant’s rights in the mark under Policy ¶4(a)(iii). See Norgren Inc. v. dnsprotect, FA 1647283 (Nat. Arb. Forum Dec. 29, 2015); see also Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed). Respondent has actual knowledge of the JACK WOLFSKIN mark, demonstrating bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <jack-wolfskin.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, January 5, 2016
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